Passing Off Advice

Savvy_Sue

You really need to pay for some proper legal advice. I can't see any alternative.

paddyrg

Well, what Sue says notwithstanding, you seem to have got what you wanted - they've committed to stop using your TM until you can hammer it out offline - in court if needs be. An injunction would do no more.

A 5-day deadline could be seen by the courts as unreasonable, so I think you've got a result. They are seeking a legal opinion/representation, so you should do likewise IMHO.

Bulldog1979

Hi everyone and thank you for your comments,

paddy / sue I couldnt afford to take legal advice (great as it would be!) unfortunately as our company is a new one and we have already spent over £1,000 in getting this far!

The situation now is I understand why they have told me that they will take 14 days to think about their comeback - because they have had 1,000's of magazines printed and distributed With our TM in it! - Hence why I simply can't afford to:
a) let the company continue to pass-off their service as ours (which they intend to do in 14 days - (coincidence?!) on the back of our advertising and our TM
b) afford to pay for more fees (apart from court fees)

Am I right in thinking in order for me to stop the company using my TM at their event I need to get an Injunction (N244)? - If someone could point me in the right direction I will do the rest (or try to!)

I know Im asking a lot and I have already messaged a few pro-bono groups asking for assistance - time is of the essence (hence the short deadline) with this and I need some help please? - Many Thanks in advance

Kayalana99

I will say now no legal expert just a thought.

If their is no dispute it's your trademark, and they have blatantly copied your advert which is in itself would be copyrighted to you...

Can't you just go down the route of a no win no fee solicitor? Surely this would be an open and shut case?

paddyrg

I see 4 ways forward

1) Injunct
2) Wait and sue
3) License
4) Do nothing

1) I wouldn't want to without advice you say you can't afford to get
2) If they send the magazine out before you've successfully resolved things, you can sue. Again, take advice, but you might find a line of credit with a lawyer if it's as straightforward as you suggest.
3) Offer to license the TM and materials to them - bring your plans forward and take a slice of each sale, letting them do all the work for you - free money. Certainly take advice to draw up the agreement, but you may be able to get the other party to pay your legal fees as a part of the deal.
4) Walk away and pick a different battle

bris

You really cant afford a court case, you cant even afford to start one. Your lack of funds makes it impossible to do anything other than threaten them.


When it comes to the actual law suit the solicitors are going to want paying up front, at least a good part of it and this won't be £400.


Even when you win the chances of getting damages are going to be slim, any fool can close a company when they are faced with a large bill.


Sorry to be blunt but coming here looking for legal advice on such a complex issue does not bode well for your chances of success.

patman99

Have you considered some 'out-of-the-box' thinking ?.
Would it be beneficial to pay your solicitor to send a letter to the publisher of the magazine in which they are passing themselves off as your business?.
The letter would have to be along the lines of "It has been brought to our attention that company x has been placing adverts purporting to be company a. We therefore request that in order to avoid legal proceedings, you disallow this company to post adverts containing any referance to company a.".

paddyrg

Patman has an interesting idea, although I suspect if the publisher is of any size or value they'll have their own legal department and it becomes a legal battle on 2 fronts. Be careful with the wording, and maybe suggest that they talk to the advertiser to replace the advert immediately, being careful not to threaten anything. Or that there's an editorial story here for future editions.

If you can resolve this amicably the savings will be enormous, and I personally think licencing seems the way to go - both sides save on legal fees, and this can go towards the licencing agreement. It still may be that the other party didn't act in bad faith per se - there are lots of idiots out there who think if you find a picture/anything on the internet it must be 'free'. Millions of 'em, in this country alone. People who wholesale copy eBay listings, photos and all. If you've got one of those, they should be smart enough to stop when they're caught out, otherwise frankly they're not smart enough to run a company

Mistral001

paddyrg. You have to consider it from the publisher's point of view. They have a customer who advertises with them. They get a letter from some firm that they have never heard of before, a competitor of that customer, saying this that an the other about their customer. The accusations have not been proven in court. What would that publisher do? Probably throw it in the bin, or maybe send it to the customer. They would probably spend about 5 seconds thinking about the matter.

paddyrg

It's probably too late now anyway, however whilst the publisher may choose to ignore a letter, they may also forward it on to the advertiser, increasing the expectation of something needing resolution. If the publication had, for instance, been writing an editorial/advertorial and it became known to them that fact checking could become quite important to reduce the risk of trouble downstream, they may have adjusted it. Of all the things a publisher wants, especially if it's a small/niche one, a quiet life is on the list.

But it's likely gone to print now, so kinda moot! And my principal advice is to seek actual, paid, professional advice.